Pamela Chestek
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You Can’t Sue the Co-Owners of Your Trademark
It seems like a simple concept, maybe so simple it isn’t litigated much. You can’t sue the co-owner of your trademark. It’s a band name case (what else?), over “Get the Led Out,” a cover band of Led Zepplin. In 2002 Plaintiff Paul Piccari conceived of the idea to form a band and thought up… Continue reading
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Just Because You Don’t Manufacture Doesn’t Mean You’re a “Distributor”
John Welch at The TTABlog summarizes a case that is characterized as a manufacturer-distributor dispute over the ownership of the mark “UVF861” for UV light bulbs. John does a thorough job summarizing the case, which I won’t repeat here. In its opinion, the TTAB applied the presumption that in a manufacturer-distributor relationship, the manufacturer owns… Continue reading
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Patent Ownership in Germany
Here’s an interesting little patent case involving the ownership of patents under foreign law, in this case German law. The plaintiff’s principal, Werner Schnaebele, worked in Germany for a predecessor of the defendant. He signed one employment agreement that didn’t have any provision for ownership of inventions conceived of by employees, meaning local law would… Continue reading
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Common Law Rights and the Geographic Scope of Registration
Oh no, I don’t think so. The Camellia Grill was a New Orleans restaurant that closed in 2005 after Hurricane Katrina. Various aspects of the business were owned by various entities owned by Michael Shwartz; for our purposes we’ll just refer to them all as “Shwartz.” In August, 2007, Shwartz entered into several agreements with… Continue reading
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Tax Structuring Strikes Again
Oh, adidas. adidas AG is a large multinational conglomerate headquartered in Germany. It reported that at the close of 2014 it had 154 subsidiaries, one of which is co-plaintiff adidas America, Inc. A few years ago adidas developed “miCoach,” an “interactive personal coaching and training system.” Parent adidas AG owns the company’s US patents but,… Continue reading
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When Is an Infringed Trademark “Registered”?
A claim for trademark infringement can be brought under two different sections of the Lanham Act, Section 32 for infringement of registered trademarks and Section 43(a) for infringement of unregistered trademarks.* Registration provides some evidentiary benefits, like prima facie evidence of distinctiveness, so if a plaintiff doesn’t have a registered trademark then it will have… Continue reading
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You Need to Take Care of the Little Details
Every patent litigation starts with an examination of the chain of title, or at least it should. Often there are multiple inventors; every link for each one has to be there, and even the language of the employment agreement has to be just right. Even after that, every corporate assignment has to be done properly.… Continue reading
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It Doesn’t Work That Way
When we last visited Florida VirtualSchool v. K12, Inc., the Court of Appeals for the Eleventh Circuit certified a question to the Supreme Court of Florida. As a refresher, in Florida VirtualSchool we have a state entity, FVS, enforcing a trademark. The defendants argued, successfully at the trial court stage, that FVS did not have… Continue reading
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The Year Is the Key
I previously asked readers to “Name the Owner” of a copyrighted work. And the answer is: Urbont does not own the copyright* and the case is dismissed. The key is that the work was created in 1966, so whether the Iron Man Theme was a work for hire is decided under the Copyright Act of… Continue reading
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Not What I Would Have Guessed …
Plaintiff ZipSleeve, LLC had registered its ZIPSLEEVE trademark* but the registration lapsed for failure to file a declaration under Section 8 of the Trademark Act. ZipSleeve filed a new application, which hasn’t registered yet. ZipSleeve sued West Marine Inc. for trademark infringement under 15 U.S.C. § 1114, which is for infringement of a registered trademark.… Continue reading
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